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(1) Teva Pharma BV (2) Teva UK Lt v (1) Amgen Inc (2) Amgen Manufacturing Ltd [2013] EWHC 3711 (pat)

Case Summary  |  Judgment  |  21 November 2013

 

James Abrahams recently appeared for Teva Pharma BV and Teva UK Ltd (“Teva”) resisting an application that the First Defendant (“AI”) cease to be a party to the proceedings issued by Teva.

Proceedings had initially been issued against AI alone as the registered proprietor of the European patent in issue. AI had however assigned the patent to the Second Defendant (“AML”), a wholly owned subsidiary of AI, some weeks before issue unbeknownst to Teva.

Teva had agreed to the addition of AML as a party but were not prepared for this to be at the removal of AI from the proceedings. Teva wished for AI to remain a party as they envisaged that relevant disclosure might be gained from them. The question before the Court was whether it was “desirable” within the meaning of CPR rule 19.2(3) for AI to cease to be a party.

Refusing the application, Arnold J held that while it did not necessarily follow that it was desirable for AI to remain a party only because the claim against them (as the registered proprietor) had been properly issued, and that it was not legitimate to maintain AI as a party purely in order to obtain disclosure, the latter was a factor which could be taken into account (though it was not significant in the present case).

The deciding factor militating against AI’s removal as a party was that Teva had a real prospect of securing declaratory relief as against them at trial.

Applying Rolls-Royce Plc v Unite the Union [2010] 1 W.L.R. 318 it was held that notwithstanding AI no longer having legal ownership of the patent, Teva had a legitimate interest in ensuring AI are bound by any later determination of the court on the issues.